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Improper priority claim is not a material allegation which renders patent void under s.53

This was a patent infringement action, relating to an invention that pertains to a fast, uniform and contactless method of crosslinking polymers using infrared radiation. Uponor sued for patent infringement and the Defendants counterclaimed with allegations of invalidity, including anticipation and obviousness, insufficiency of description and indistinct claims, lack of utility, overbreadth, unpatentable subject matter, and non-entitlement to priority claims. The Defendants also claimed that the patent was void under section 53(1) of the Patent Act and that the Plaintiff was guilty of laches and acquiescence in bringing the action.

The Federal Court (FC) held that some of the claims were valid and infringed. The case had been bifurcated and the quantum of damages is to be determined by reference at a later date.

In dismissing the section 53 allegation, the FC noted that the inventors were neither involved in patent drafting nor were they ever "applicants" as explicitly contemplated by the Patent Act. Further, the only effect of an improper priority claim would be that the applicant is not entitled to the benefit of the earlier claim date. The FC stated that for an allegation to be material, it must somehow affect how the public makes use of the invention. Therefore, an improper claim to priority is not a material allegation which renders the patent void. The FC also dismissed the Defendants' claim that the Plaintiff was guilty of laches and acquiescence.

With respect to the allegations of invalidity, the FC held that most of the patent's claims were invalid for lack of utility, insufficient disclosure and for anticipation and/or obviousness. The FC found that the claims providing for the elimination of wavelengths by use of filters were invalid not only for inutility, but also for insufficient disclosure, as they do not enable the person of skill in the art to understand what type of filter to use in order to achieve the benefits promised by use of filters.

On the issue of infringement, the FC found direct infringement by two of the Defendants. The FC concluded that the Plaintiff was not entitled to an accounting of profits, as it failed to demonstrate some basis for the excise of equity.